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HyperLaw LetterTo Attorney General Reno - Request DOJ To File Amicus Brief for Text Case - September
Note: By a letter dated October 3, 1996 from Joel I. Klein,
Deputy Assistant Attorney General, DOJ declined to file an
amicus brief on the text issues.
P.O. Box 1176
New York, New York 10023
September 27, 1996
Attorney General Janet Reno
United Stated Department of Justice
10th & Constitution Ave., N.W.
Washington, D.C. 20530
Dear Attorney General Reno:
I am requesting in the enclosed letter that the Department
file an amicus brief in support of HyperLaw's motion in
Matthew Bender & Company and HyperLaw v. West Publishing
Company for a determination that the text of court opinions,
apart from the headnotes and syllabus, may be copied from
West reporters and used by competing publishers in their
products without infringing West copyrights.
The Antitrust Division has filed a brief in support of
Matthew Bender's motion with respect to the citation of page
numbers and an amicus brief in support of the same position
in Oasis v. West. In some ways this is an even more
important motion, because it is not possible to obtain the
copies of many historical opinions from court archives.
Even where opinions are obtainable, the opinions do not
include corrections made by judges and communicated to West.
Moreover, it is an extremely costly process. Matthew Bender
attempted to obtain five years worth of opinions from court
files in New York, and, ultimately disbanded the project.
This problem is highlighted by the release, this week, of
the FLITE (Air Force)-JURIS (DOJ) archive of United States
Reports opinions. However, that archive does not opinions
Many may ask why are there no opinions after 1985? In 1985,
the DOJ and the Air Force stopped keying in this data, and
instead relied upon data provided from West and its Supreme
Court Reporter. Further, according to the DOJ's position,
it entered into a license agreement that required it to give
the West data back to West at the end of the contract
[others interpret the contract to permit DOJ to keep the
opinion text portion of the data.]
Clearly, this was a policy mistake. Had DOJ continued to
key in Supreme Court opinions from the public document or
negotiated a clear contract to assure that DOJ owned its
archive of opinions, then the public would have benefited
greatly by the announcement this week because it would have
received a complete set of opinions.
Why does DOJ not have its own archive of federal court
opinions? Again, one must go back to 1976. FLITE and DOJ
wanted to create their own court opinion database. West had
not yet gone electronic. When DOJ and FLITE approached
West, West took the position that DOJ and FLITE could not
key in the court opinions from West Reporters -- even if DOJ
and FLITE did not key in the West headnotes and digests.
DOJ and FLITE then had the following choices:
1. Challenge West's copyright assertions and key in
the court opinions over the West objections.
2. Obtain the opinions from the courts and key them
3. Obtain a license from West to permit DOJ to key in
non-copyrighted court opinions. [West did not have
the data in electronic form at that time].
There was apparently no political will to confront West
which would be required in choice 1. Choice 2 was very
expensive and impossible as well -- many opinions were
missing and many changes were found only in West books, and
not in the court file . DOJ and FLITE selected choice 3,
obtaining a license from West(and opted not to select choice
2 for new opinions, a choice still available today.) In
selecting choice 3, DOJ and FLITE keyed in the data, but
retained the right to keep the court opinions at the
termination of the contract -- but West extracted the
promise that DOJ and FLITE would not provide the purely
public domain court opinions to the public. In the
process, the government keyed West books for West and helped
West jump-start Westlaw. Lexis complained bitterly about
this unfair competition. Lexis complained to Congress and
even filed lawsuits citing this transaction. See Mead Data
Central, Inc. v. United Sates Department of the Air Force,
566 F.2d 242 (D.C. Cir. 1977).
One may wonder how was it possible that Lexis was able to
create its database of opinions -- if as I claim, it is
impossible to obtain the original opinions and corrections
from the courts.
The answer is simple -- Until West sued Lexis in 1988 for
copyright infringement, Lexis keyed in the opinions from
West case reports.
When West and Lexis entered into the secret 1988 agreements
for case citations, they also settled the text copyright
claims as well. [The docket sheet in the 1988 copyright
case shows that the copyright claims on text were settled.]
We understand that Lexis stopped keying in from West books
around 1988, and it is fair to conclude that this was one of
the terms of the secret 1988 settlement agreements.
As a result, only West and Lexis have an historic archive,
and no one else, or will. That is why these parties need to
keep the 1988 agreements secret. It appears that some in
the Antitrust Division may be embarrassed that they have
allowed these two big companies to have entered into a deal
which results in total domination of the on-line legal
After 1988, Lexis stopped making a public issue about the
FLITE deal and made no statements at the 1992 Congressional
hearing. One familiar with litigation settlement agreements
would conclude that Lexis is gagged by the secret 1988
There was another company that could have challenged West
and keyed in opinions from West books. That was Thomson.
Indeed Thomson had an on line service that they shut down in
1988. As Vance Opperman stated in his testimony to Congress
in 1992, at page 115 of the hearing on HR 4426:
You can get them [court opinions] on LEXIS, and you
used to be able to get them on Veralex. Veralex was
available through LCP before Llyod Thomson and Thomson
International bought Lawyers Cooperative Publishing for
$810 million, along with the other 25 American
publishers they have bought in the last 8 years. They
then phase out Veralex.
LCP (Lawyers Cooperative) was obtaining its data from LEXIS
and the secret 1988 agreement between West and Lexis relates
One of the results of the merger is that Thomson will never
have to confront West with the text issue as it had started.
Thomson, by 1994, had already confonted on the text issue.
Thomson did this by buying a database of Texas opinions from
Curtis Hill Publishing Company and releasing those opinions
on a CD-ROM. The database Thomson was publishing was keyed
in from the West case reporters. Thus, Thomson was directly
confronting West on the very same text issue that dogged
Juris and FLITE in 1976 and Lexis in 1988.
In 1993 Matthew Bender & Company acquired the same Curtis
Hill database. West then immediately threatened Matthew
Bender about the use of that database. This was described
by Judge Martin's in his decision of May 1, 1996. Matthew
Bender & Co., Inc. and HyperLaw, Inc. v. West Publishing
Company, 1996 U.S. Dist. LEXIS 5871, 39 U.S.P.Q.2d (BNA),
1079 Copy. L.R. (CCH) (P. 27,505)(S.D.N.Y May 1, 1996) (Note
that West also includes corrections to the body of the
opinions in the term "West textual additions."):
Many of the opinions that Bender collected for the
planned enhancement of the Texas product were purchased
in database form from Curtis Hill Publishing. West has
contended that the Curtis Hill database includes
certain textual additions copied from West's South
Western Reporter, including parallel citations, case
titles, docket number, judge and attorney names, and
rehearing information (the "West textual additions").
In its complaint, Bender alleges that West has
threatened to sue it if it includes star pagination to
West reporters in Bender products, and that West has
also threatened suit over use of the West textual
additions contained in the Curtis Hill database.
Bender thus seeks a declaration that its use of these
features in the enhanced Texas product does not
infringe any West copyright.
The foregoing may explain why Lexis has been silent
regarding the text issue in their challenge to the West-
Thomson merger ... because Lexis already has its deal with
West for the historic data.
It is imperative that DOJ go on record, as it should have in
1976, that West copyrights are not infringed when the
government or a competing publisher keys in the text of the
court opinions from a West case reporter, but does not key
in the West headnotes and syllabi.
We ask, therefore, that DOJ immediately file an amicus brief
in support of this proposition in the pending action in New
Thank you very much.
Alan D. Sugarman
HyperLaw filed a narrow FOIA request in 1993 for this exact same Juris-Flite Supreme
Court data that was released this week. Our FOIA request did not seek any other
information and it was denied by DOJ. Therefore, I was chagrined to see that a publisher
of court opinions, Villanova Law School (which did not file such a FOIA request at that
time) was given a copy of this data when HyperLaw was not provided the data on the
same terms and conditions. It was wrong to give West the first crack at the data in 1976.
It is wrong to give Villanova first crack at the newly released data in 1996 while
withholding it from others which have filed specific clear requests for the data.
Attorney General Reno
September 27, 1996
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